WIXLIB

35 U.S.C. 102(a)(2): U.S. and PCT Patent Documents ArePrior Art as of the Date They Are “Effectively Filed”35 U.S.C. 102(a)(2) precludes a patent if a claimedinvention was described in a:o U.S. Patent;o U.S. Patent Application Publication; oro PCT Application Publication designating the U.S.that names another inventor and was effectively filedbefore the effective filing date of the claimed invention35

35 U.S.C. 102(d): Determining the Date that a U.S. orPCT Patent Document Is “Effectively Filed” Date that a U.S. or PCT patent document being applied as a referenceis effectively filed is the earlier of:– the actual filing date of the U.S. patent or published application;or– the filing date of the earliest application to which the U.S. patent orpublished application is entitled to claim a right of foreign priorityor domestic benefit which describes the subject matter Date that a patent document used as a reference is effectively filedmay be different depending on whether the application underexamination is subject to AIA or pre-AIA law36

Three Exceptions to35 U.S.C. 102(a)(2)Prior ArtIn brief– 102(b)(2)(A): A disclosure of the inventor’s work in a U.S. patentdocument or PCT publication by another is not prior art to the inventor 102(b)(2)(B): A disclosure of the inventor’s work shields the inventorfrom the prior art effect of a subsequent disclosure in a U.S. patentdocument or PCT publication 102(b)(2)(C): A disclosure is not prior art to the inventor if it wascommonly owned with the claimed invention not later than the inventor’seffective filing dateNote that the 102(b)(2) exceptions pertain to the 102(a)(2) patentdocuments, which may be prior art as of the date that they are effectivelyfiled. Grace period is not relevant.37

35 U.S.C. 102(b)(2)(A) Exception:Disclosure Obtained from InventorFirst exception: A disclosure in an application orpatent shall not be prior art under 35 U.S.C.102(a)(2) if:the disclosure was made by another whoobtained the subject matter directly orindirectly from the inventor or joint inventor38

Example 4: Exception in 102(b)(2)(A)Smith’sapplicationpublishesSmith filespatent applicationdisclosing XOctober 1, 2015April 1, 2014July 1, 2014Taylor filespatent applicationclaiming X Smith’s patent application publication is not prior art if Smithobtained X from Inventor Taylor because of the exception under102(b)(2)(A) for a disclosure obtained from the inventor39

35 U.S.C. 102(b)(2)(B) Exception:Intervening Disclosure by Third PartySecond exception: A disclosure in an application orpatent shall not be prior art under 35 U.S.C. 102(a)(2)if:the subject matter disclosed was, before suchsubject matter was effectively filed, publiclydisclosed by:–the inventor or joint inventor; or–another who obtained the subject matterdirectly or indirectly from the inventor orjoint inventor40

Example 5: Exception in 102(b)(2)(B)Smith filespatent applicationdisclosing XSmith’sapplicationpublishesApril 1, 2014March 1, 2014Taylorpublishessubject matter X October 1, 2015July 1, 2014Taylor filespatent applicationclaiming XSmith’s patent application publication is not prior art against Taylor’sapplication because of the exception under 102(b)(2)(B) for an interveningdisclosure by a third party.41

35 U.S.C. 102(b)(2)(C) Exception:Commonly Owned DisclosureThird exception: A disclosure made in an application orpatent shall not be prior art under 35 U.S.C. 102(a)(2) if:the subject matter and the claimed invention werecommonly owned or subject to an obligation ofassignment to the same person not later than theeffective filing date of the claimed inventionResembles pre-AIA 35 U.S.C. 103(c), but applies to bothnovelty and obviousness, whereas pre-AIA disqualified artonly for obviousness42

Commonly Owned orSubject to Obligation of Assignment Applicant can establish common ownership orobligation of assignment by making a clear andconspicuous statement Corroborating evidence is not required43

Example 6: Exception in 102(b)(2)(C)Smith inventsX and assignsto Company ZSmith filespatentapplicationdisclosing XMarch 1, 2014April 1, 2014February 1, 2014Taylor invents X andassigns to Company ZJuly 1, 2014Taylor files patentapplication claiming X Smith’s patent application publication is not prior art because of theexception under 102(b)(2)(C) for a commonly owned disclosure. There is no requirement that Smith’s and Taylor’s subject matter bethe same in order for the common ownership exception to apply.44

RulesChanges to Implement the First Inventor to FileProvisions of the Leahy-Smith America Invents Act,78 Fed. Reg. 11024 (February 14, 2013)Effective Date: March 16, 201345

Important Rules for AIA Applications 37 C.F.R. 1.55 and 1.78–filing certified copy of foreign priority document–statements in transitional applications 37 C.F.R. 1.130–attribution exception–prior public disclosure exception46

Rule 1.55(a), (b), (d), and (e):Foreign Priority in a 35 U.S.C. 111(a) Application To take advantage of the new definition of “effective filing date”which includes a foreign filing date, applicant must:– claim foreign priority within the later of: 4 months from the actual filing date of the application; or 16 months from the filing date of the foreign priorityapplicationand– include the foreign priority in an application data sheet (ADS) Foreign priority claimed is waived if omitted from the ADS Unintentionally delayed claim may be accepted by petition47

Rule 1.55(f):Certified Copy of Foreign Priority Document Certified copy of any foreign priority application must be filedwithin the later of:– 4 months from the actual filing date; or– 16 months from the filing date of the prior foreign applicationunless an exception applies Certified copy is needed since U.S. patents and U.S. patent applicationpublications have prior art effect as of the date that they are effectivelyfiled, which might be the foreign priority date48

Rule 1.55(f)-(i): Three Ways to Satisfy theTime Limit Requirement to File theCertified Copy Applicant files a certified copy of the foreign priority document withthe Office within the 4/16 time period Applicant authorizes Office to retrieve a copy of the foreign priorityapplication through the Office’s Priority Document ExchangeProgram (PDX) Applicant files interim copy of the foreign priority within the 4/16time period In order to perfect foreign priority, the certified copy of the foreignpriority document or a copy retrieved via PDX, must be received bythe Office no later than patent grant49

Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6):Statements in Transitional Applications Nonprovisional applications that are:– filed on or after March 16, 2013;and– claim foreign priority or domestic benefit of anapplication filed before March 16, 2013,are called transitional applications If a transitional application has ever included a claim to aninvention having an effective filing date on or after March 16,2013, applicant must provide a statement to that effect50

Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6):Statements in Transitional ApplicationsFiled beforeMarch 16, 2013;Priority/Benefitclaim beforeMarch 16, 2013No statement required;pre-AIA applicationFiled on or afterMarch 16, 2013;Priority/Benefitclaim beforeMarch 16, 2013Statement required if theapplication ever included aclaim to an invention havingan effective filing date on orafter March 16, 2013;transitional applicationFiled afterMarch 16, 2013;Priority/Benefitclaim afterMarch 16, 2013NO statement required;AIA application51

Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6):Statements in Transitional Applications Applicant is not required to identify how many or which claimshave an effective filing date on or after March 16, 2013 A statement is not required if applicant reasonably believes thatthe application does not, and did not at any time, contain a claimthat has an effective filing date on or after March 16, 2013 A statement is not required for transitional applications that addunclaimed subject matter, which if claimed would have aneffective filing date on or after March 16, 201352

Rule 1.55(j), 1.78(a)(6), or 1.78(c)(6):Timing of Statements for TransitionalApplicationsStatements must be filed within the later of:– 4 months from the actual filing date of the later-filedapplication;– 4 months from the date of entry into the national stage;– 16 months from the filing date of the prior-filed applicationfrom which benefit or priority is sought;or– the date that a first claim having an effective filing date on orafter March 16, 2013, is presented in the later-filed application.53

Rule 1.130 Affidavits or Declarations Revised rule 1.130 provides a mechanism for anapplicant or patent owner to provide informationrelevant to certain prior art exceptions:– affidavit or declaration of attribution under1.130(a), to invoke the 102(b)(1)(A) or 102(b)(2)(A)exception– affidavit or declaration of prior public disclosureunder 1.130(b), to invoke the 102(b)(1)(B) or102(b)(2)(B) exception54

Rule 1.130(a):Affidavit or Declaration of Attribution In response to a rejection based on a disclosure, applicant orpatent owner may submit an affidavit or declaration ofattribution attesting that the disclosure was made– by the inventor or joint inventor;or– by another who obtained the subject matter discloseddirectly or indirectly from the inventor or joint inventor Declaration or affidavit may be used to overcome a rejectionbased on 102(a)(1) or 102(a)(2) prior art by invoking the102(b)(1)(A) or 102(b)(2)(A) exception, respectively55

Rule 1.130(b):Affidavit or Declaration of Prior Public Disclosure In response to a rejection based on a disclosure, applicant orpatent owner may submit an affidavit or declaration of priorpublic disclosure attesting that a prior public disclosureof the subject matter was made– by the inventor or joint inventoror– by another who obtained the subject matter discloseddirectly or indirectly from the inventor or joint inventor Declaration or affidavit may be used to overcome a rejectionbased on 102(a)(1) or 102(a)(2) prior art by invoking the102(b)(1)(B) or 102(b)(2)(B) exception, respectively56

Rule 1.130(c):Affidavit or Declaration Not Available An affidavit or declaration is not available to overcome arejection if:– the rejection is based on a disclosure made more thanone year before effective filing date of claimed invention An affidavit or declaration under rule 1.130 may notavailable to overcome a rejection if:– the affidavit or declaration contends that the inventornamed in prior art U.S. patent or U.S. patent applicationpublication derived the claimed invention57

Resources Statutory Framework Chart:http://www.uspto.gov/aia implementation/FITF card.pdf FAQs:http://www.uspto.gov/aia implementation/faqs first inventor.jsp Examiner Introductory Video: http://helix-1.uspto.gov/asxgen/AIAClose Cpt.wmv Examiner Overview Training Slides: (available on AIA micro-site soon) Examiner Follow-up Video: (available on AIA micro-site soon)58

Questions?59

Micro EntityChanges to Implement Micro Entity Status for PayingPatent Fees, 77 Fed. Reg. 75019 (December 19, 2012)Effective March 19, 201360

Benefits 75% discount on fees for “filing, searching,examining, issuing, appealing, andmaintaining” patent applications/patents Discount does not apply to fees paid by athird party (e.g., administrative trials)61

Establishing Micro entity Status:Option 1 Applicant must certify that the applicant:– Qualifies as a small entity;– Has not been named as an inventor on more than 4 previouspatent applications;– Did not have a gross income exceeding 3 times the medianhousehold income in the preceding calendar year;and– Did not convey a license or other ownership interest in theapplication to an entity that had a gross income exceeding 3times the median household income in the preceding calendaryear (and not obligated to do so)62

Option 1:Application Filing Limit Each inventor and each applicant is limited to “four previously filedpatent applications” in which he or she was “named as the inventoror a joint inventor”Applications IncludedCount all Pending, Patented,and Abandoned:U.S. NonprovisionalApplications ExcludedForeign(New, Continuing, and Divisional)Utility and DesignProvisionalNational Stage (PCT)PCT International Stage if U.S. national stage filing fee not paidReissueSection 1.29(b) exclusion:Application in which “all ownership rights” wereassigned or are obligated to be assigned by theinventor or non-inventor applicant “as the result of”the inventor’s or applicant’s “previous employment”63

Option 1:Gross Income Limit If the application names joint inventors:– Income requirement applies to each applicant’s andeach inventor’s income separately Any licensee or assignee must also meet the incomerequirement64

Example 1: Disqualification UnderOption 1 Joint inventor in a pending patent application was namedas an inventor in:– 3 abandoned U.S. nonprovisional patent applications;– 1 U.S. patent; and– 1 U.S. reissue application Result Applicant does not qualify for micro entity statusbecause joint inventor was named as an inventor on morethan “four previously filed patent applications”65

Example 2: Disqualification underOption 1 Joint inventor assigned rights in the invention to acorporation with revenue exceeding 2 billion per year Result applicant does not qualify for micro entity statusunder Option #1 because joint inventor assigned rights inthe invention to an entity that exceeds the gross incomelimit If assignee corporation has under 500 employees,applicant might be entitled to small entity status66

Establishing Micro entity Status:Option 2Applicant must certify that: Applicant qualifies as a small entity;AND Applicant’s employer, from which he/she obtains themajority of his/her income, is an institution of highereducation; OR Applicant has conveyed a license or other ownershipinterest in the application to such an institution of highereducation (or is obligated to do so)67

Option 2: Institution of HigherEducation Defined in section 101(a) of the Higher Education Act of 1965 “Institution of higher education” must, among other requirements:– be located in a “State;”– be a public or other nonprofit institution legally authorized withinsuch “State;”and– provide a post-secondary educational program that: Awards a bachelor’s degree or provides not less than a 2 yearprogram acceptable for full credit toward such a degree, or Awards a degree that is acceptable for admission to a graduateor professional degree program68

Example 3: Qualification underOption 2 University meeting “institution of higher education” criteria uses aseparate research foundation for technology transfer 2 of the 3 inventors obtain the majority of their income asemployees of the university Third inventor is an uncompensated undergraduate student 3 inventors are identified as the applicant Each inventor assigned their rights in the application to theresearch foundation Result Applicant would qualify for micro entity status if:(1) the undergraduate student can qualify under option #1, and(2) the research foundation is a small entity and meets the grossincome limit of option #169

Example 4: Disqualification underOption 2 Same as Example #3, except that one of the inventorsleaves the university and refuses to cooperate with theresearch foundation Research foundation files the application as the applicant Result Unless the research foundation can qualifyunder Option #1, micro entity status is not available,because the research foundation is not an employee of theuniversity and has not conveyed to the university70

Example 5: Option 2 Qualification All inventors conveyed their rights in the subject application toa university meeting the “institution of higher education”criteria Inventors are named as the applicant No party that does not qualify as a small entity has rights in theapplication One inventor’s gross income for the calendar year precedingpayment of the filing fee is 10 times the median householdincome Result Applicant qualifies for micro entity status becausegross income is not relevant to Option #271

Micro Entity Certification Micro entity certification must be filed in anapplication with or before fees may be paid inthe micro entity amount Separate micro entity certification is required foreach application72

Who can sign the certification? A micro entity certification must be signed by:– registered patent practitioner;– inventor named as the sole inventor and identified asthe applicant;or– all inventors named as the joint inventors andidentified as the applicant Micro entity certification for a juristic applicant(assignee-applicant) must be signed by a registeredpatent practitioner73

Micro Entity CertificationForms: Option 174

Micro Entity Certification Form:Option 275

Micro Entity Certification Separate micro entity certification is notrequired for each fee payment– But applicant must be entitled to micro entitystatus whenever a fee is paid in the microentity amount Applicant should evaluate entitlement to microentity status each time a fee payment is made76

Loss of Entitlement Notice of loss of micro entity status must bemade in writing– Payment of a small or large entity fee is notsufficient notification– Notification of loss of micro entity status isnot treated as notice of loss of small entitystatus77

Example 6: Loss of Entitlementunder Option 1 Sole inventor applicant filed a patent application in 2013 accompaniedby a certification of micro entity status Applicant had gross income in 2012 below the “Maximum QualifyingGross Income” reported on the USPTO website when filing, search, andexamination fees were paid in the micro entity amounts Applicant filed a petition for extension of time in 2014 and wasrequired to pay an extension of time fee Applicant’s gross incom

35 U.S.C. 102(a)(1)Prior Art In brief- 102(b)(1)(A): A grace period disclosure of the inventor's work is not prior art to the inventor 102(b)(1)(B): A disclosure of the inventor's work shields the inventor from the prior art effect of a third party's subsequent grace period disclosure